Legal Articles

Latest Federal Court Cases, 2/18/19

Overview

In this appeal from the United States District Court for the District of Delaware, the Federal Circuit reversed and remanded an order granting Sonitor’s motions for summary judgment of non-infringement and invalidity, based on lack of written description, of U.S. Patent No. 8,604,909 (“the ’909 patent”).

The ’909 patent relates to systems for real-time location, which allow users to locate and identify portable devices in a facility, such as a hospital, by using a base station that communicates with the portable devices. While the claims at issue require “ultrasonic” components for the communication, the majority of the specification—in fact, all but two sentences—discusses infrared or radio frequency components.

In granting Sonitor’s motion for summary judgment of invalidity, the district court focused on those two sentences, finding that while the specification “contemplated” ultrasound, it was not sufficient to meet the written description requirement. The Federal Circuit disagreed, finding that genuine issues of material fact remain as to whether the specification adequately disclosed the implementation details for how a portable device can communicate with the corresponding base station using ultrasonic technology.

The Court explained that “written description is about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described; it is not about whether the patentee has proven to the skilled reader that the invention works, or how to make it work, which is an enablement requirement.” Calling attention to the district court’s heavy reliance on the fact that the specification devoted less attention to the ultrasonic component, the Court explained that this “does not necessarily mean that the inventors did not also constructively reduce to practice a system with ultrasonic components.”

Sonitor argued that the specification is insufficient based on the Court’s en banc holding in Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), which explained that “generic claim language appearing in ipsis verbis in the original specification does not satisfy the written description requirement if it fails to support the scope of the genus claimed.” However, the Court noted that the question here is “the level of detail the ’909 patent’s specification must contain … to adequately convey to a skilled artisan that the inventors possessed an ultrasonic embodiment.” The Court explained that the district court erred by not sufficiently crediting CenTrak’s expert’s testimony that the differences between infrared and ultrasound, when used to transmit small amounts of data over short distances, are incidental to carrying out the claimed invention. The Court found that expert testimony, combined with the inventor’s testimony suggesting that it would be “simple for a person of ordinary skill in the art to adjust for the differences between IR and ultrasound,” created a genuine issue of material fact such that summary judgment was not warranted.

As to infringement, the Court first found that Sonitor’s arguments relating to timeliness were without merit, and then addressed CenTrak’s argument that Sonitor “makes” infringing systems under 35 U.S.C. § 271(a), despite the undisputed fact that Sonitor does not provide certain claimed elements in its accused systems. CenTrak argued that Sonitor “makes” the invention because it “performs an act that completes an infringing assembly.”

The district court and Sonitor argued that CenTrak’s theory is incorrect, and relied on the proposition that to “make” a system, a single entity must assemble the entire system itself, comparing Sonitor’s actions to the defendant in Centillion Data Systems, LLC v. Qwest Communications International, Inc., 631 F.3d 1279 (Fed. Cir. 2011). In Centillion, Qwest was found not to infringe the patented system because to “make” the system, the customer, not Qwest, must complete the system by installing the software. However, the Court here held that Sonitor and the district court misunderstood CenTrak’s theory, which compares Sonitor not to Qwest, but to Qwest’s customers, who completed the claimed system by installing the software. The Court found CenTrak’s evidence that Sonitor is the “final assembler” of the accused system—because, e.g., its Vice President “oversees the installation” and its employees go “on site and configure [its] system—created a triable issue of fact on direct infringement, even though Sonitor does not “make” each of the claimed components of the system.